The Complainant is Arcelormittal (SA), Luxembourg, represented Nameshield, France.
The Respondent is Saeed Ahmadi, Iran (Islamic Republic of). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2021. On July 12, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On July 13, 2021, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2021. On August 3, 2021, the Center notified the Respondent’s default. The Center appointed Luca Barbero as the sole panelist in this matter on August 9, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a company specialized in the production of steel for use in automotive, construction, household appliances and packaging. With approximately 168,000 employees worldwide, customers in 160 countries and 71.5 million tons crude steel made in 2020, the Complainant holds sizeable supplies of raw materials and operates extensive distribution networks and over 200 trademarked products. The Complainant is the owner of the following trademark registrations, as per trademark certificates submitted as annex 3 to the Complaint: - International trademark registration No. 1198046 for MITTAL (word mark), registered on December 5, 2013, in classes 6 and 40; - European Union trademark registration No. 004233301 for MITTAL STEEL (word mark), filed on January 7, 2005 and registered on March 27, 2006, in classes 6 and 40. The Complainant is also the owner, amongst others, of the domain name The disputed domain name The Complainant contends that disputed domain name With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not commonly known by the disputed domain name nor is he in any way affiliated or authorized by the Complainant to use the trademarks MITTAL or MITTAL STEEL. The Complainant further contends that the Respondent does not carry out any activity or have any business with the Complainant and states that, considering the Respondent has not made any use of the disputed domain name since its registration, he lacks legitimate interest in respect of the disputed domain name. With reference to the circumstances evidencing bad faith, the Complainant indicates that, given the distinctiveness and reputation of the Complainant’s trademarks, the Respondent most likely registered the disputed domain name with full knowledge of the Complainant’s trademarks rights. The Complainant emphasizes that the disputed domain name is not pointed to an active website and that it is inconceivable that the Respondent may have ever contemplated active use of the disputed domain name that would not be illegitimate, such as by passing off, infringing consumer protection legislation or infringing the Complainant’s rights under trademark law. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademarks MITTAL and MITTAL STEEL based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 3 to the Complaint. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1 , the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to the trademark MITTAL as it reproduces the trademark in its entirety with the mere addition of the term “steel” and the country code Top-Level Domain (“ccTLD”) “.ir”, which can be disregarded when comparing the similarities between a domain name and a trademark. See, along these lines, sections 1.8 and 1.11.1 of the WIPO Overview 3.0. The Panel also finds that the disputed domain name is confusingly similar to the trademark MITTAL STEEL, since both terms “mittal” and “steel” encompassed in the Complainant’s trademark are reproduced in the disputed domain name, with the mere inversion of the terms, which does not prevent a finding of confusing similarity. Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent. Accordingly, in line with previous decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Saeed Ahmadi, might be commonly known by the disputed domain name. Furthermore, there is no indication before the Panel that the Respondent might have made preparations to use the disputed domain name, which is currently non pointed to an active website, in connection with a bona fide offering of goods or services. In view of the Respondent’s default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483, where the panel found that, absent some contrary evidence from the respondent, passive holding of a domain name does not constitute legitimate noncommercial or fair use. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered or is being used by the Respondent in bad faith. The Panel finds that, in light of i) the prior registration and use of the Complainant’s trademarks MITTAL and MITTAL STEEL in connection with the Complainant’s products and services, ii) the well-known character of such trademarks and iii) the clear confusing similarity of the disputed domain name with the trademarks MITTAL and MITTAL STEEL, the Respondent very likely registered the disputed domain name having the Complainant’s trademarks in mind. As to the current use of the disputed domain name not pointing to an active website, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. See also Section 3.3 of the WIPO Overview 3.0: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or coming soon page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” In the case at hand, in view of the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademarks, the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name, the Respondent’s failure to respond to the Complaint and the implausibility of any good faith use to which the disputed domain name may be put, the Panel finds that the Respondent’s lack of use of the disputed domain name also amounts to bad faith. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered or has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Luca Barbero 1 In view of the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to WIPO Overview 3.0, where appropriate.
Sole Panelist
Date: August 23, 2021
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